Summary: Brand owners can use quia timet actions in India proactively to stop trademark infringement before it even happens, but must be careful about how, when and before which forum they seek remedies.
Introduction
In common law, the term "laches" is used to refer to a doctrine in equity, which courts employ to deny reliefs to a party with a valid claim, in cases where that party considerably delayed in asserting their claim. In other words, the court helps only those who are alert and vigilant about their rights, and may choose to not help people who "sleep over their rights".
The doctrine of laches also begs the question of the reverse: does equity help the paranoid?, i.e., someone who is so excessively vigilant over their rights to the point of making claims before they actually arise? A fine balance must be tread as to what is the appropriate time and opportunity for a person to claim their rights.
What is a quia timet action?
This is where the quia timet doctrine enters the picture. Quia timet, which is Latin for "because he fears", is a legal remedy where one can approach a court before the damage is actually done, but it also requires demonstrating that there is a real and credible threat. These actions become particularly important in trademark matters, where potential misuse can ruin a brand's value and reputation.
Perhaps a brand owner notes that someone is trying to sneak into their brand space, say, by filing a similar mark, but no actual confusion has occurred yet. A brand owner cannot simply approach a court with abstract fears or hunches. Courts are not inclined to act on mere suspicion. There must be a solid, clear threat that looks very likely to happen soon.
What is a quia timet action?
The odds of a quia timet being entertained, therefore, require showing solid proof of an upcoming infringement or injury. The most convincing proof would be for a brand owner to demonstrate that they have (a) taken steps to collect the facts, (b) gather evidence, and (c) considered and eliminated other options (like opposing a trademark at the registry), because they are not likely to be concluded quickly enough to stop the harm.
Where can a quia timet action be filed?
Next arises the question of jurisdiction. In other words, where must such an action be filed. The answer to this requires considering the principles of territorial nexus, as well as the cause of action (Section 20 of the Civil Procedure Code, 1908, or the "CPC"). The plaint must show how the anticipated harm connects to the forum where the suit is filed. In trademark matters (or other intellectual property suits), if the threat involves potential sale or display of infringing goods, the court in the location where such market use is expected may be the appropriate forum to take jurisdiction.
Recent jurisprudence on quia timet
One example of a quia timet action came up before a Division Bench of Delhi High Court, which dismissed an appeal in Deepak Kumar Khemka vs Yogesh Kumar Jaiswal & Ors. [Decision dated 28 July 2025, in RFA(COMM) 381/2025, CM APPL. 42135/2025].
The appellant (plaintiff) Deepak Kumar Khemka is in the business of manufacturing and selling products like tobacco, matchboxes, pan masala, etc., under trademarks like "SHUDH", "SHUDH PLUS", and "SHUDH PLUS ULTRA LABEL". The defendants (respondents) applied to register a similar trademark "ATS SHUDH" in Class 34 (which includes tobacco products). This application was published in the Trademark Journal on 12 February 2024. The appellant opposed the trademark application before the Trademarks Registry on 19 March 2024. The appellant soon after also filed a suit for trademark infringement and injunction before the Court, fearing the defendants would start using the trademark and sell products under it (even though no such goods were actually found in the market).
The suit was filed as a quia timet action. The respondents applied under Order VII Rule 11(a), CPC, to dismiss the suit as there was no cause of action. The Single Judge agreed and dismissed the suit, after which the present appeal was filed.
The Division Bench upheld the dismissal, holding that merely applying for a trademark is not enough to file an infringement suit, and it must be shown that the mark is actually being used or that it will definitely be used soon. The plaintiff/appellant admitted that his team could not find any such products in the market.
In arriving at its findings, the Court followed key Supreme Court judgments like K. Narayanan v. S. Murali, (2008) 10 SCC 479 and Dhodha House v. S.K. Maingi, (2006) 9 SCC 41, which both said infringement suits can only arise after actual use of the mark, not just a registration application. The Court observed that, "The trigger point for an infringement action is use, not registration of the plaintiff's mark, or a mark which is identical or deceptively similar thereto, by the defendant."
Conclusion
This case reinforces that the starting point for any trademark infringement suit under Section 29 of the Trade Marks Act, 1999, is the "use" of the trademark. Courts are not likely to entertain suits based only on mere fear of use, unless there is clear evidence. Therefore, the real challenge for brand owners is to assess, from a business perspective, as to when a simple trademark application becomes a real threat, and when appropriate litigious action must be taken. Vigilance and timing are both key. For a brand owner to succeed, they should keep records of anything that suggests real harm. While being proactive is advised, one must be careful and measured as well. As this case shows, overenthusiasm in vigilance may in fact backfire. Quia timet actions are powerful tools, but they are clearly best deployed when other remedies, like oppositions, are either not adequate, or not available.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
